Jaani Riordan represented Facebook in this pre-trial review which raised an important point of patent pleading practice.
The patentee, Voxer, sought to introduce an infringement case based on the doctrine of equivalents, relying on Actavis v Eli Lilly [2017] UKSC 48. The issue for the court was whether such a case needed to be pleaded or was simply a matter for argument. Voxer argued that while it might be necessary to plead an equivalents case in the IPEC, where parties must plead all the facts and arguments on which they intend to rely, this was not the case in the Patents Court and in the Shorter Trials Scheme.
Lord Justice Birss rejected Voxer’s argument as a matter of principle and held that reliance on the doctrine of equivalents ought to be pleaded. CPR rule 16.4(1)(a) provides that Particulars of Claim must include “a concise statement of the facts on which the claimant relies”, and a case based on the doctrine of equivalents inevitably involves an assertion or assertions of fact which are distinct from the general questions of fact arising in relation to patent infringement on a normal interpretation. The first and second Actavis questions necessarily include such distinct issues of fact, which accordingly must be pleaded.
As practical guidance, Birss LJ confirmed that this practice should be followed irrespective of whether a patent infringement claim is being heard in the Patents Court, the Shorter Trials Scheme, or IPEC. However, it may not be necessary to plead all details fully at the outset or to characterise the inventive concept of the patent claim in the Particulars of Infringement, but it is necessary at a minimum for the Particulars of Infringement to contain a statement, by reference to each relevant claim feature (and claim), that equivalence is relied on.